No Trademark Rights on Names of Holy or Religious Books: Supreme Court of India

The Supreme Court of India, vide its judgment dated October 27, 2015 in Lal Babu Priyadarshi v. Amrit Pal Singh (Civil Appeal No. 2138 of 2006), held that no person can claim exclusive rights over the name of a holy or religious book as a trade mark for his goods or services marketed by him.

Brief Facts of the Case

The Appellant, Lal Babu Priyadarshi trading as M/s. Om Perfumery, made an application to the Registrar of Trade Marks to register the trademark “RAMAYAN” with the device of crown in class 3 in respect of incense sticks (agarbattis, dhoops) and perfumeries etc.

The Respondent, Amritpal Singh trading as M/s. Badshah Industries, filed a Notice of Opposition against the aforesaid trademark under Sections 9, 11(a), 11(b), 11(e), 12(1), 12(3) and 18 (1) of the Trade and Merchandise Marks Act, 1958 (repealed by the Trade Marks Act, 1999) claiming that the impugned mark, being the name of a religious book, cannot become the subject of monopoly for an individual.

The Asst. Registrar of Trade Marks dismissed the Opposition of the Respondent vide order dated March 31, 2004 and held that, the impugned trademark consists of device of crown and the word “RAMAYAN” is capable of distinguishing the goods and is not included in the list of marks not registrable under the aforesaid Act.

Aggrieved, the Respondent preferred an appeal before the Intellectual Property Appellate Board (IPAB), which, vide its order dated January 10, 2005, set aside the order dated March 31, 2004 of the Asst. Registrar of Trade Marks.

Aggrieved by the aforesaid order of the IPAB, the Appellant filed the present Appeal by way of special leave.

The Hon’ble Apex Court framed the following issue for deciding the present Appeal:

Whether the registration of the word “RAMAYAN” as a trade mark, being the name of a Holy Book of Hindus, is prohibited under Section 9(2) of the Trade Marks Act, 1999?

Contentions of the Appellant

The Appellant, inter alia, made the following submissions:-

The Appellant is in the business of manufacturing, trading and marketing of incense sticks since 1981. Through extensive use, wide advertisement and the excellent quality of the products, the trademark “RAMAYAN” and the carton in which the products are sold have become distinctive in such a manner that use of the same or similar trademark or carton by any other person will cause confusion and deception in the trade and amongst the public.

The mere fact that the trademark is the name of a religious book cannot be a sufficient ground for refusal of registration under Section 9(2) of the Act and is not based on evidence on record that the feelings of any section of the Hindus have been hurt by its use in relation to incense sticks.

The Asst. Registrar of Trade Marks rightly held that the impugned trademark is capable of distinguishing the Appellant’s goods and the trademark is not included in the list of marks not registrable under the Act.

The IPAB totally misconstrued the observations of the standing committee in the Eighth Report on the Trade Marks Bill, 1993. In Clause 13.3 of the said report, even though the Committee had observed that “any symbol relating to religious gods, goddesses, places of worship should not ordinarily be registered as a trade mark”, it specifically refrained from prohibiting registration of such marks.

The IPAB ought to have seen that there are several cases which indicate that use of names of Hindu deities as a trademark is a common practice and no one has complained about the same being sensitive to Hindu religious sentiments.

Contentions of the Respondent

The impugned mark, being name of a religious book, cannot be the subject matter of monopoly for an individual.
• The mark “RAMAYAN” is not a distinctive mark and is devoid of any distinctive character. The mark is not capable of distinguishing the goods of one person from those of another.

The mark “RAMAYAN” is not registrable since it is the name of a well-known religious book.
• More than 20 traders in Patna (principal place of business of the Appellant and Respondent) and many more are using the trademark “RAMAYAN”, thus, it has become public juris.

The impugned mark is identical with the Respondent’s mark “BADSHAH RAMAYAN” which is pending registration and the impugned registration will cause harassment to other traders and purchasing public would be bound to be confused and deceived.

Order of the Apex Court and its Rationale

The Apex Court observed that in Clause 13.3 of the Eighth Report on the Trade Marks Bill, 1993, the Parliamentary Standing Committee expressed its opinion that any symbol relating to Gods, Goddesses, places of worship should not ordinarily be registered as a trademark. However, the Committee did not want to disturb the existing trade marks by prohibiting their registration as it will result in chaos in the market. At the same time, the Committee trusted that the Government will initiate appropriate action if someone complains that a particular trademark is hurting his religious susceptibilities. When this report was presented on April 21, 1994, the Appellant’s trademark had not been registered and the application filed by the Respondent opposing its registration was dismissed only on March 31, 2004 by the Asst. Registrar of Trade Marks.

The word “RAMAYAN” represents the title of a book written by Maharishi Valmiki and is considered to be a religious book of Hindus in India. Thus, using exclusive name of the book “RAMAYAN” for getting it registered as a trademark for any commodity could not be permissible under the Act. If any other word is added as suffix or prefix to the word “RAMAYAN” and the alphabets/ design/ length of the words is same as of the word “RAMAYAN”, then the word “RAMAYAN” may lose its significance as a religious book and it may be considered for registration as a trademark.

The word “RAMAYAN” is being used as a mark for similar products by more than 20 traders in Patna and in different parts of the country, therefore, it has become public juris and common to the trade.

There are many holy and religious books like the Quran, Bible, Guru Granth Sahib, Ramayan etc. to name a few. The answer to the question as to whether any person can claim the name of a holy or religious book as a trade mark for his goods or services marketed by him is clearly ‘NO’.
In view of the above, the Apex Court upheld the decision of the learned IPAB and dismissed the Appeal.

Concluding Remarks

In a religiously diversified country like India, several traders choose to name their businesses after names of holy books and religious texts etc. The judgment of the Supreme Court is important as it authoritatively held that the name of a holy book or religious texts like The Quran, The Bible, The Guru Granth Sahib, The Ramayan etc. cannot be monopolized by a person as a trademark for his goods or services marketed by him.

Incidentally, the aforesaid judgment was pronounced on Valmiki Jayanti, birth anniversary of Maharishi Valmiki, who is known to have composed the great Sanskrit epic and Hindu religious text, the Ramayan in the 4th or 5th Century B.C.

The aforesaid Order dated October 27, 2015 can be accessed here.
Disclosure:

Our firm was the instructing counsel on behalf the Respondent in this case.